A patent portfolio is both a sword and a shield; leverage your analysis with Clearstone Elements to wield both with agility.

These are some of the most critical questions asked of in-house patent counsel, but they can also be the most dreaded. Experienced practitioners know there are no easy answers. Reliable results can be expensive and are often reached only after a significant investment in time.

ClearstoneIP is changing all of that.

In any strategic patent assessment, whether defensive or offensive, it is critical to know what technologies, products, or processes are actually covered by a particular portfolio. Patent metrics based on bibliographic and other surface data only go so far; these critical questions can only be answered with an in-depth analysis of patent claims.

That’s why we’ve built the ideal platform for capturing and interacting with patent portfolio analysis. After a one-time effort to index a patent collection, Clearstone Elements leverages that analysis to yield powerful results, including the ability to:

Map competitor products to your patent portfolio in minutes to discover the patents that are most likely to be infringed. The process can be repeated for any number of products, with each mapping typically taking less than 30 minutes (even for large portfolios that include thousands of patents).

Map your products to your patent portfolio to determine whether your portfolio provides adequate protection for your product line and to discover gaps in coverage. This is also a convenient way to manage patent marking.

Mix and match product mappings to different portfolios or collections of patents to assess offensive and defensive strategies with respect to various alignments. In Elements, users perform a product mapping by interacting with a hierarchy of technical elements irrespective of the underlying patents. The user can map a product once and apply the mapping to different patent sets interchangeably, a truly unique capability that only ClearstoneIP can offer.

Quickly adapt product mappings to account for product changes over time to zero in on which patents become relevant due to the changes.

Apply saved product mappings to patents and portfolios indexed later in time. The unique nature of Elements offers a mechanism that instantly compares saved product mappings to any patents that are indexed at a later time. So when newly issued/acquired patents are indexed, Clearstone Elements will instantly inform the user which of these patents are likely to cover previously mapped products.

The Elements platform provides a degree of patent omniscience that some of our users have likened to “seeing the matrix.”

This three-part series explains why conventional techniques, particularly “semantics-based” searching, fall short for freedom-to-operate (FTO) searching and analysis. It then puts forth a solution for avoiding these problems. Part Iwas an introduction to the differences between the searches. Part II identified the deficiencies of semantic searching in relation to FTO analysis. Part III explains how these deficiencies can be overcome. Click here to download a PDF of the entire series.

Part I and Part II of this series explained how semantic and similar keyword-based platforms are ill-suited for freedom-to-operate analysis. We saw how, for various reasons, these platforms show little for their cost.

We can overcome the shortfalls of conventional search tools by building a new FTO solution from the ground up.

Let’s take a look at some necessary characteristics of such a solution:

1. The solution must recognize claim scope, not just patent disclosure.

Easier said than done, right? Patent claims are notoriously complex and are often intentionally vague or broad. Despite its complexity, claim scope could be effectively navigated with the right platform.

First, the solution ultimately must leverage human analysis in some form. We should dispel the notion that artificial intelligence, such as semantic-based algorithms, can properly interpret claims. Sure, they may be fine at retrieving patents that disclose pertinent subject matter, but there is a fatal disconnect when it comes to claim coverage. Semantic algorithms simply cannot read and process delineations of scope. They are essentially language-similarity detectors and can’t differentiate between claimed concepts and those that are merely disclosed.

Second, the solution needs to handle claim concepts in an eliminatory or deductive framework. This is a significant departure from the status quo. Conventional platforms amass or aggregate sets of potentially relevant patents to create a large set for deeper review. However, in FTO, it is far more efficient to arrive at a review set by first eliminating irrelevant patents from a large initial set based on a claim scope determination. Several reasons for this were discussed in a previous blog post.

The correct framework places the most relevant question at the forefront, not the back end. For FTO, the question is whether a particular product embodies each claim element of a patent. It is not whether a patent discloses similar subject matter.

2. The ideal FTO solution accounts for the infinite ways of describing a product.

The ideal FTO solution should not require an analyst to identify keywords or specific terms ahead of time because, as discussed in Part II, there is never a single “right” way to do so. And if an analyst were to try to capture all of the ways, semantic platforms would retrieve an impossible amount of results.

The solution to this problem must remove this guesswork from the equation. Building on the eliminatory framework described above, the solution should present to the analyst an organized menu of claim concepts. Instead of considering what to bring into a search, an analyst only needs to consider which of the displayed claim concepts do not correspond to the product.

The menu of concepts should be displayed in an organized manner, for example an index-based system that an analyst can navigate. The index will present a list or taxonomy of technical concepts that each represent patent claim elements. In this way, the analyst can simply make a determination on an element-by-element basis as to whether it relates to the product at issue.

A rough semblance of a concept-based index exists in the form of official patent classification systems used by patent offices around the world, such as the former U.S. Patent Classification system (USPC) and the newly adopted Cooperative Patent Classification system (CPC). But these systems are still extremely cumbersome for FTO for several reasons: (i) they are not keyed to specific claim elements but, rather, general inventive concepts; (ii) they have no capacity to distinguish among different independent claims of a single patent; (iii) they are not nearly specific enough to be effective; and (iv) while they are updated from time to time, they are effectively static indices that are difficult to modify and adapt.

The ideal FTO solution includes a dynamic, easily modifiable taxonomical index of elements that are programmatically connected to specific patent claims. The index has high granularity but allows the analyst to operate as broadly or as specifically as desired without reducing efficiency.

3. The ideal FTO solution does not sacrifice completeness for relevance.

In Part II, we discussed the problems that arise when a search platform provides results in a “ranked” order. We saw that these ranking algorithms could be arbitrary since they are based primarily on similarity of language or terminology. Highly relevant results from an FTO perspective can be placed far down the result list. Missing pertinent patents in an FTO analysis is far more consequential than missing a potentially relevant reference in a patentability search.

The ideal FTO solution should be equipped to capture all potentially relevant patents, readily bring them to the surface, and do so efficiently. It will avoid burying highly relevant patents and make them easy to locate.

Clearstone Elements™ – The Ideal Solution

Our Clearstone Elements application is the ideal FTO solution. It is an interactive platform that, as a core capability, provides a comprehensive taxonomical index of technical elements drawn directly from human analysis of patent claims. As an analyst navigates the hierarchy, he or she selects elements that are not present in a product under review. The software will automatically eliminate from the initial set the patents that require the selected element for infringement. After just a short period, typically less than an hour, 90-95% of the initial patent set is usually eliminated, leaving the most critical and relevant patents for closer review.

To see this more clearly, take a look at the below real-time video, in which more than 10% of the initial patent set is eliminated in less than 45 seconds:

These kinds of results and efficiency are simply not achievable with any other system. This is how the “noise” is removed from search results.

An interesting phenomenon occurs in FTO. A large proportion of patents tend to be dismissible from an initial patent set based on only a few, general requirements. This is due in part to the noisiness of conventional search tools, but also to the peculiarities of claim-drafting.

As an example, consider the golf club field. There are about 4,500 active patents in this field, a 100-plus year old industry. Obviously, these active patents are directed to nuanced, highly incremental improvements. Yet, of this universe of highly specific patents, the claims of about 62% require a golf club head to be an “iron-type,” “putter-type,” or “wood-type.” What this means is that, if one only applies those three broad technical concepts in Clearstone Elements, they could eliminate 30-40% of patents from any particular search. Imagine what is possible by applying a few more concepts.

Determining if this phenomenon occurs in your industry is simple enough. Review a random swath of patents from the initial patent set of your last comprehensive FTO investigation. For patents that you excluded, what were the reasons? Were they excluded for requiring broad, sweeping technical concepts (or were you compelled to dig deep to understand the fine points of novelty)? Did these reasons frequently recur (or were they unique)? I suspect that most patents were dismissible based on broader concepts that frequently recur throughout the patent set. Clearstone Elements leverages this phenomenon and more to achieve incredible results.

The graph below illustrates conceptually how the addition of a deduction-based platform such as Clearstone Elements can shift the cost-accuracy curve for FTO. Because of the ease of objectively eliminating large portions of patent references with little work, high accuracy could be achieved at little cost. Conventional tools are unable to achieve this efficiency.Another important aspect of Clearstone Elements is that the analyst does not have to know beforehand which aspects of the product may present infringement issues. The patented concepts are presented on the screen in the taxonomical index. The analyst only needs to decide whether the product embodies the concept or not. This is how the system ensures that critical patents are not missed – they are only removed from the initial set upon a deliberate decision by the analyst based on displayed concepts.

Taking this a step further, analysts can create a “product record” upon completing their review of the index. This product record is essentially a fingerprint of the product as it relates to the indexed elements, and, in turn, how the product relates to the initial set of patents. The product record can be opened and modified later on to quickly reflect any changes that are made to the product during development to achieve an incredible result: The Elements interface will instantly display a list of patents that become of issue solely due to the product changes. This capability is truly unprecedented and is key in streamlining product development through enhanced communication between product designers and the legal department. See the blog post, Bridging the Divide Between Patent and Engineers, for more.

Many more interesting and powerful results are being achieved with Clearstone Elements as a foundation, which will be discussed in future articles. The methods discussed here will pave the way for a new industry standard for all varieties of patent claim analysis since they represent the correct analytical approach (not to mention how enjoyable it is to interact with the application and watch the patent counter drop!). We hope you join us on this exciting journey.

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The communication divide between a company’s legal department and its engineering corps is an ongoing source of contention, confusion, and consternation for many companies. This divide is especially problematic in the patent context where legal matters are ever-intertwined with technical complexity. For example, successful drafting and prosecution of patent applications requires in-depth technical knowledge. Effective freedom-to-operate similarly necessitates an intimate understanding of a company’s products, development strategy and ability to anticipate product revision. Patent litigation and licensing nearly always involves technical expertise and a thorough understanding of the relevant art.

Because information needed to carry out these critical tasks is often “siloed” in different departments, tension and inefficiency often results. The technical team often perceives the legal team as overly reliant and thus deserving of “Class-A Inhibitor” status. We’ve worked with some companies that have even gone so far as to locate their legal department in a completely separate building from the engineers for fear of contaminating the creative process. Yet the technical team’s efforts to involve themselves in patent matters or to “take matters into their own hands” draw ire from the legal team.

This divide has been difficult to bridge. Solutions are less than optimal, and typically involve extensive back and forth communication between the departments and murky work product boundaries. The legal team must go to great lengths to sufficiently inform the engineering side about how patents should be read and understood to ensure that they are not dismissed inappropriately. For example, a common tendency is for engineers to read teachings from the specification into the claims, which can result in construing a critical patent too narrowly and an overlooked issue. At the other end, engineers must spend significant time preparing product specifications and informing the legal team about technical aspects that are not readily available from generally-accessible company documents. A frequent difficulty here is when certain aspects of a product or process of manufacture are simply not documented (e.g., aspects that are kept under tight security measures or even those that are common knowledge to the designers but are simply not readily known to others).

There is hope.

Clearstone Elements is a software tool developed primarily to carry out infringement-based analysis, such as FTO investigations, with great efficiency and accuracy. A remarkable and somewhat surprising aspect of the platform is that it naturally provides the ideal interface between the engineering corps and the legal department. The engineering side of the interface presents an interactive technical element hierarchy while the legal side of the interface allows the legal team to conduct the necessary patent analysis based on the engineers’ technical input. The engineers can use their interface to define the technical characteristics of a particular product or process under development without actually placing eyes on a single patent. Using pre-recorded mappings of technical concepts to claim language, significant numbers of “noisy” patents are eliminated from an initial patent set. Thus, the legal team is left only with the most relevant patents that may be implicated by the specified characteristics.

Here’s how it works:

Step 1: The patent analyst reviews the claims of a collection of patents and categorizes the claim elements into a technical element hierarchy (click to enlarge):

Step 2: A member of the engineering team reviews the technical element hierarchy and creates a Product Record based on features not present in the product or process under development:

Product Mapping: Engineer selects technical features not embodied by product under development

Step 3: Clearstone Elements eliminates irrelevant patents and leaves only the most critical patents for review by the patent analyst:

Patent Review: Patent analyst reviews the most relevant patents based on the engineer’s Product Record

Step 4 (if needed): If the product later undergoes modifications, the engineer returns to the previously saved Product Record and makes the necessary changes to reflect the new technical characteristics. Clearstone Elements automatically identifies which patents become of issue due to the product changes:

Product Variation: Clearstone Elements automatically indicates which patents become of issue due to product changes

Clearstone Elements supplies the perfect interface between the legal team and the technical team. Technical information is efficiently received from engineers in a manner that maintains the proper legal framework applicable to freedom-to-operate studies (and other infringement-based analysis). Patent analysts and engineers can now work together seamlessly and frequently throughout the entire product development cycle to realize tremendous gains in freedom-to-operate efficiency. Now if only we could do something about Marketing…

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For decades, a real problem area facing patent professionals has been the inefficiency of searching and analyzing patents for purposes of infringement. Sure, there are many ways to search and retrieve information for prior art or validity purposes based on patent disclosure, from basic keyword searching to advanced semantics-based algorithms, but these methods routinely fall short when the task is to determine a set of patents that might be infringed by a particular product. In other words, conventional searching doesn’t work when the focus is on claim scope, not disclosure.

This is because it is impossible for patent searchers to conceive of every possible manner of describing a particular system. Patents that use different terminology from that used in the search and patents that are broader in concept (but still relevant) are often missed using conventional search methods. Even when highly relevant references are retrieved, it still takes considerable time for an analyst to work through the “noise” of claims that can easily be dismissed because the target product clearly lacks at least one claim element.

ClearstoneIP’s mission is to provide a platform for effectively memorializing and interacting with patent claim analysis. It is the first tool to reliably capture the key information necessary to conduct rigorous, reliable, and efficient infringement-based analyses.

Here is a short list of five of the most powerful benefits of memorializing patent claim analysis:

1. Fast and Efficient Infringement Analysis

The most effective way to memorialize claim analysis is to create a hierarchical index of technical elements that represent features recited in claims. With this index, patents that claim similar features can be grouped together according to their technical elements. To conduct an infringement analysis, such as identifying potentially infringing products, performing freedom-to-operate, or other portfolio management activities, you can simply navigate the index of elements and select the ones that are not present in the target product. The software will automatically eliminate patents that require the selected elements for infringement. You are left with a resulting set that includes highly relevant patents that couldn’t be eliminated.

The process of selecting elements from the index that are not embodied by the target product is fast (typically less than an hour even for patent sets including thousands of patents) and can be done without looking at a single patent. You will have confidence that the remaining set of patents will be highly relevant because it represents the references that could not be cleared based on conscious and deliberate decisions with respect to actual claim elements.

2. Enhanced Reliability and Accuracy

When conducting infringement analyses, we instinctively want to jump to the most obvious question: “which patents cover the target system?” This question leads us to seek out references that disclose or claim aspects that are similar to the target system, which results in mountains of patent documents. This approach is fine for prior art or invalidity searches, but for infringement analysis it is fraught with unneeded expense of effort while failing to retrieve the unknowably relevant documents (e.g., patents with claims that are broad, use different terminology, or otherwise describe subject matter differently from that which the searcher/analyst can anticipate). The effort is overly burdensome because, while this mountain of documents may be highly relevant from a technological similarity perspective, the large majority of results will include at least one claim element that is clearly not present in the target system.

ClearstoneIP posits a complete reframing of infringement analysis. Before getting to the ultimate question above, the first and most relevant question should be: Which patents can I eliminate from consideration because they clearly claim something that is not in the target product?

In other words, the focus should be on finding reasons to eliminate or clear a patent reference, not on trying to find the most similar references. This can be achieved effectively by using an index of technical claim elements that represent subject matter drawn directly from a memorialized claim analysis. This process is highly reliable and accurate because references are only eliminated based on a conscious and deliberate decision to do so. It automatically takes account of claims that are very broad and describe subject matter in different ways, and will yield these hard-to-find but highly relevant documents in the result sets.

3. Real-Time Product/Portfolio Monitoring

With an index of technical elements drawn directly from actual patent claims, you can save a record of selected elements in connection with a particular product. This saved record can be applied to previously-analyzed patent sets as well as patents added after the Product Record is created. This means that patents that issued after the product record was created can be instantly associated with the previously analyzed product.

Example: In January 2015, you analyze a product against a memorialized claim element index and save the record. In June 2015, you wish to update the analysis. Let’s assume 150 new patents have issued between January and June in the relevant field of art and have been annotated. As soon as you open up the previously-saved product record, the system will inform you which of the 150 new patents are “cleared” and which are relevant to the product, without having to do any additional work.

4. Tracking Product Modifications

Another powerful use of the Product Records just described is the ability to quickly locate patents that become of issue due to product or system modifications.

With conventional methods, changes to products require a near-complete reworking of an infringement analysis because added features may not have been considered the first time around, or patents that were previously considered are now moot because certain considered features have since been removed. In each case, there is no easy way to adapt the previous work product without starting the search from the ground up again.

Starting with a Product Record that represents features of an originally-designed product in relation to an index of technical elements, a user can easily make the necessary adjustments so that the Product Record represents the modified product. Based on the differences between the resulting patent sets of the original Product Record and the modified Product Record, the Clearstone Elements software will immediately inform the user which patents have become of issue due solely to the product modifications.

5. Databases Don’t Have Sick Days

All too often, the depth and wealth of institutional patent knowledge resides in a secure location accessible by only one individual: in the mind of the resident technical expert. If that person is not available or eventually decides to leave the company, he or she takes the information with them, resulting in a knowledge vacuum.

Memorializing claim analysis with Clearstone Elements is a great way to preserve institutional knowledge and make it accessible by anyone. Analyses and records can easily be shared between and acted upon by many users within the organization.